property law

17

BAnner & WITCoFF |

Intellectual Pro

Perty

uP

date

| fall/

W

inter 2014

By Ross A.

DAnnenBeRg & R.

gRegoRy IsRAelsen

Starting with

Medtronic, Inc.

v. Mirowski Family Ventures, LLC — analyzed in

Banner & Witcoff’s Spring 2014 Newsletter —

the U.S. Supreme Court considered a number

of intellectual property cases in its 2013–14

term. From patent-eligible subject matter to

the copyright implications of new technology,

the Court’s opinions provide guidance on

a wide variety of topics, each of which is

analyzed below. In addition, as of September

2, 2014, the Supreme Court has granted

certiorari in another three cases. These are

also introduced below.

PAtent CAses

Alice Corp. v. CLS Bank International:

Patent-Eligible Subject Matter

One of this term’s most-watched intellectual

property cases was Alice Corp. v. CLS Bank

International, where the Court reviewed the

standard for determining patent-eligible

subject matter under 35 U.S.C. § 101.

The Court examined judicially created

exceptions to statutory text; specifically,

that “laws of nature, natural phenomena,

and abstract ideas are not patentable.”

In Alice, the claims were directed to a “scheme

for mitigating ‘settlement risk’ — i.e., the

risk that only one party to an agreed-upon

financial exchange will satisfy its obligation,

... using a computer system as a third-party
intermediary.” The Court held that the claims
at issue in Alice were “directed to an abstract
idea,” and thus not patentable.
The Court elicited a two-step framework to
determine whether claims are directed to an
abstract idea. In future cases, when a district
court addresses this issue, the court must first
“determine whether the claims at issue are
directed to [a] patent-ineligible concept” —
here, an abstract idea. Second, the court must
“search for an ‘inventive concept’ — i.e., an
element or combination of elements that is
‘sufficient to ensure that the patent in practice
amounts to significantly more than a patent
upon the [ineligible concept] itself.’”

To determine whether a concept is an

abstract idea, the court “must distinguish

between patents that claim the ‘building

blocks’ of human ingenuity and those that

integrate the building blocks into something

more.” While the Court acknowledged

that “[a]t some level, ‘all inventions

embody, use, reflect, rest upon, or apply

... abstract ideas,’” patent claims that
“‘risk disproportionately tying up the use
of the underlying’ ideas” are
excluded as abstract ideas.

Supreme Ip: The u.S. Supreme CourT

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more 3

Since 2013, the Supreme Court has either heard or

granted certiorari in 7 patent cases, 2 copyright cases,

and 4 trademark/Lanham Act cases.